Weili Mu v Guotai Huang

[2021] ATMO 113

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Weili Mu to registration of trade mark application 2024353 (33) – JAZZ NEW BOSS (Figurative) – in the name of Guotai Huang

Delegate:

Nicholas Smith

Representation:

Opponent: Cowell Clarke Pty Ltd

Applicant: Norman Waterhouse Lawyers

Decision:

2020 ATMO 113

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Weili Mu (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Guotai Huang (‘Applicant’): 

Application Number:

2024353

Filing Date:

19 July 2019

Priority Date[1]:

7 Feb 2019

Goods:

Class 33: wine; drinks containing wine (wine predominating); dessert wine; still wines; beverages containing wine (wine predominating); red wine; sweet wine; Vintage wines; Fortified wines; Alcoholic beverages containing wine; Beverages containing wine (wine predominating); Blended wine; Cooking wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Low alcohol wine; Mulled wines; Non-sparkling wines; Red wine; Sparkling fruit wines; Sparkling wines; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; White wine; Wine

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

[1] Convention priority claimed: 7 February 2019, China, No. TMZC30148044D01T190311, in respect of Aperitif; wine; liqueur; sparkling wine; brandy; whiskey; sour wine (entry level wine); fruit wine (alcoholic); alcoholic beverage juice; alcoholic beverage concentrate in class 33.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 4 February 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 12 April 2020. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 20 July 2020 by Weili Mu, the Opponent, with Annexures WM-1 to WM-17 (‘Mu 1’).

   5.  The Applicant filed the following evidence in answer:

   ·Declaration made on 22 January 2021 by Liyan Guo, a lawyer employed by the Applicant’s representative, with Annexures GL-1 to GL-16 (‘Guo declaration’).

2. The Opponent filed the following evidence in reply:

   ·Declaration made on 22 March 2021 by Weili Mu (‘Mu 2’).

   7.  I am concerned with the nature of the Applicant’s evidence.  Ms Guo is a lawyer employed by the Applicant’s legal representative.  Absent any specific explanation (none having been provided) I would not expect her to have a direct level of knowledge of the Opponent’s business or the relationship between the parties.  Furthermore much of the Guo declaration consists of statements in the nature of submissions in response to the grounds of opposition in the SGP.  As such to the extent the Guo declaration annexes documents I shall treat that as evidence, and to the extent that the Guo declaration makes submissions I shall treat that as submissions.  However in the event that there is a conflict between the evidence in the Mu declarations, which are provided by a witness with direct personal knowledge of the events, and the evidence of Ms Guo, who does not, based on the evidence before me, have any such knowledge, I am minded to prefer the Opponent’s direct recollection of events.

   8.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

   9.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

3. The Opponent is an individual based in Australia who is the sole shareholder and director of the China Australia Mu Trading Group Pty Ltd (‘Mu Group’).  

   11.     The relevant claims/statements in the Mu declarations can be summarised as follows:

   ·     The Mu Group is a company incorporated in 2015 that sources wine for customers which are then on sold to distributors, retailers or consumers in China.  It will either receive artwork from its customers and produce a bottle label for them based on that artwork, or it will design the entire wine label, including branding. 

   ·     In situations where Mu Group designs a label for the customer, it either provides the label to the customer in exchange for a design fee or agrees that the customer will have to purchase wine under that label exclusively through the Mu Group.

   ·     The Opponent and Applicant met in 2016 and discussed doing business together, with the Mu Group sourcing wine for the Applicant’s company Pomerol Wine Industry Co. Ltd, later known as Magic Tree Winery (Guangzhou) Fine Wine Co Ltd. (‘Pomerol’).  The Applicant sought the Opponent’s opinion in respect of a number of wine labels. The Opponent thought that none of them were suitable.

   ·     On 20 January 2017, in a WeChat conversation the Applicant agreed that the Opponent would design a wine label.  The Opponent eventually proposed using the trade mark ‘McLaren New Boss’ (the ‘McLaren Mark’)

   ·     The Opponent and Applicant did not enter into a formal contract regarding the McLaren Mark but the Applicant confirmed verbally on 24 February 2017 that Pomerol would only order wine from the Mu Group and the Mu Group did not send Pomerol an invoice for the design of the McLaren Mark.  Furthermore, around this time, the Opponent and Applicant had discussed forming a new company to source and export wines together.

   ·     Following agreement to create the McLaren Mark, the Opponent commenced designing a logo and on 10 February 2017, sent the Applicant the proposed logo (‘McLaren Logo’) which is an image of a man smoking a cigar and wearing a top hat in a stylised circle, which is identical to the logo element in the Trade Mark.   Between 10 and 24 February 2017 the Opponent made further modifications to the proposed wine label incorporating the McLaren Logo and McLaren Mark and created a final design on 28 February 2017 (‘McLaren Label’).

   ·     There was an initial contract in February 2017 between the Mu Group and Pomerol that never proceeded. While the initial contract does have a clause referring to the ownership of the labels (clause 16.6) such a clause is a standard clause that only applies when the buyer owns the IP in the labels and hence must warrant that the buyer is the actual owner.

   ·     The  first order placed by Pomerol was on 21 April 2017.  The April 2017 contract was between Mu Group and Guangzhou Fengma Trading Co Ltd as Pomerol did not have an import licence.  That contract said nothing about the ownership of the design, though it did say ‘Wine Label to be provided by buyer’.  This reflected the reality that Pomerol was physically printing the wine labels in China but that Mu Group was applying the label to the bottles in Australia.  The Mu Group has entered into other contracts in Australia for wine bearing the McLaren Label.

   ·     The Opponent has done further design work for the Applicant creating a wine label using the words ‘Magic Tree’.  

   ·     In 2018 the Mu Group arranged to rent a booth in Guangzhou to showcase its wine under the McLaren Label. It did so unaware that the Applicant was bottling wine under the McLaren Label and under the Trade Mark without approval from the Mu Group and that the Applicant had applied to register the McLaren Label in China without approval.

   ·     Annexure GL-2 to the Guo declaration, which shows the use of ‘New Boss’ and a similar logo in 2016, appears to have been altered and hence may not be a genuine record.  In any event the Opponent had never been told about ‘new boss’ prior to coming up with the name and the logo.

   12.     The annexures  to Mu 1 and Mu 2 include screenshots of conversations had via  WeChat (that the Opponent provides translations for) and contracts entered into by the Mu Group for the sale of wine under the McLaren Label.

   The Applicant

   13.     The Applicant is an individual who is the sole director and shareholder of Pomerol, which is an entity incorporated in China. 

   14.     The relevant claims/statements in the Guo declaration can be summarised as follows:

   ·     On 20 October 2016, the Applicant and a Pomerol employee had a WeChat conversation (extracted at GL-2 to the declaration) where a similar logo featuring the words ‘New Boss’ and a gentleman was shared (‘Original New Boss Logo’). 

   ·     Following initial meetings between the Applicant and Opponent, to discuss the sourcing of wines for Pomerol, Pomerol and the Mu Group entered into a contract on 15 February 2017 for the supply of wine.  On the same date, via WeChat, the Applicant proposed the New Boss name for the wine to be supplied.

   ·     Clause 16.6 of the 15 February 2017 contract provides that the label was owned by the Buyer (being Pomerol) and the Mu Group must not use the labels without authorisation. 

   15.     The annexures to the Guo declaration include a copy of the February 2017 contract between Pomerol and Mu Group and screenshots of the relevant WeChat conversations referred to in the Guo declaration.  

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   17.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined for the purposes of ss 42(b) 58, 62A and parts of s 60 is 19 July 2019 (‘relevant date’), being the filing date of the application in Australia.[4] The Applicant has also claimed a Convention Priority date pursuant to the Madrid Protocol being 7 Feb 2019; this is the relevant date for the ground of opposition pursuant to s 60 with respect to the goods for which the Applicant has claimed convention priority, being ‘Aperitif; wine; liqueur; sparkling wine; brandy; whiskey; sour wine (entry level wine); fruit wine (alcoholic); alcoholic beverage juice; alcoholic beverage concentrate’. I note that nothing in my decision turns on the difference between the relevant date and the Convention Priority date.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).

   Discussion

   Section 58 – Applicant not owner of trade mark

   18. Section 58 is reproduced below:[5]

   [5] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12] (Hearing Officer Wilson).

   Section 58 - Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   19.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

   20. The ground based on s 58 was particularised in the SGP as follows:

   The Applicant is not the owner of the JAZZ NEW BOSS (Trade Mark No. 2024353) (“Applicant’s Mark”). The Applicant’s Mark is substantially identical with a mark which the Opponent has been applying in the course of trade since in or around at least September 2017 (the “Unregistered Mark”). The Unregistered Mark comprises:

   1)a caricaturized image of a man smoking a pipe which is identical to that contained in the Applicant’s Mark (the “Figure”); together with

   2)the words “New Boss” and/or “McLaren New Boss” in a font and colour which is identical to that used by the Applicant in the Applicant’s Mark.

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [7] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

5. I will now consider whether the Trade Mark is substantially identical to the McLaren Label, being the mark particularised in the SGP.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

   [9] (1963) 109 CLR 407, 414.

6. The Trade Mark is identical to the McLaren Label other than the replacement of the prominent first word ‘McLaren’ with the word ‘Jazz’.  The fact that each of the respective marks contain distinctive and distinct first elements result in the respective marks, on a side by side comparison, not being substantially identical.   

7. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

   Section 60

8. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

9. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date, or where applicable the Convention Priority date, there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[10]

   [10] The present paragraph and the following paragraphs summarising the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

10. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[11]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[12]

    [11] [2000] FCA 1335, [81].

    [12] (1992) 33 FCR 302, 343.

11. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[13]

    [13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

12. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[14] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[15]

    [14] (2000) 50 IPR 1.

    [15] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

1. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Opponent has applied the Unregistered Mark in the course of trade in Australia since around at least September 2017, with the Unregistered Mark being applied to bottles on behalf of the opponent by various bottlers in Australia.  By virtue of the Opponent’s use of its Unregistered Mark, the Unregistered Mark has acquired a significant reputation with the relevant public in relation to wine in class 33.  The Unregistered Mark acquired its reputation in Australia before the priority date for the Applicant’s Mark.

   The Applicant’s Mark is substantially identical to the Unregistered Mark and the Opponent understands that the Applicant has attempted to have the Applicant’s mark or derivatives of that mark applied to bottlers by bottlers in Australia used by the Opponent.  Because of the reputation of the Unregistered Mark, the use of the Applicant’s Mark by the Applicant would be likely to deceive or cause confusion.

2. If I were to take the Opponent’s evidence at its highest, I would find that the Mu Group (not the Opponent) had applied the McLaren Label to a relatively small quantity of cleanskin wines over a 2 year period, such wines being solely for export purposes. There is no evidence of any consumer sales or advertising of any wines featuring the McLaren Label or any similar mark in Australia prior to the relevant date. I am not satisfied that, at the relevant date or the Priority Date the McLaren Label or any other trade mark corresponding to the Trade Mark had acquired a reputation in Australia sufficient for the requirements under s 60(a).

3. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

4. Section 42 is reproduced below:

   Section 42 - Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:
   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

5. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[16]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[17]

   [16] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [17] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

6. The Opponent has particularised the ground of opposition in the SGP as follows: 

   The Opponent is the owner of the New Boss Concept trade mark (2010425) (‘Opponent’s Mark’) and has been applying the Opponent’s Mark and the Unregistered Mark in the course of trade since around September 2017.  The applicant’s use of the Applicant’s Mark in respect of the goods claimed would be contrary to law because it would constitute

   1.Misleading and deceptive conduct under section 18 of the Australian Consumer Law because consumers are likely to be mislead or deceived into believing that the goods offered under the Applicant’s Mark are those of the opponent, or somehow associated or affiliated with or approved by the Opponent when they are not;

   2.A misrepresentation in breach of section 29 of the Australian Consumer Law in that the applicant’s use of the Applicant’s Mark implies some sort of sponsorship, approval or affiliation with the Opponent, which does not exist and/or

   3.An infringement of the Opponent’s exclusive rights in the Figure as a copyright owner under the Copyright Act 1968.

7. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[18] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [18] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

8. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[19], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[20] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.

   [19] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [20] [2003] FCA 104, [107] (Beaumont J).

9. With respect to the copyright claim, as discussed further under the s 62A ground, I note that the onus is on the Opponent to prove that the use of the Trade Mark by the Applicant would be, rather than could be, contrary to the Opponent’s rights as a copyright holder.  In the present case, I am not satisfied on the evidence before me that the Opponent is the holder of copyright in the McLaren Logo, both because the Logo, based on the Opponent’s evidence, is clearly based upon a third party photograph whose provenance is uncertain, and because the commercial arrangements between the parties under which the Opponent designed the logo are sufficiently opaque that I cannot conclude, on the balance of  probabilities, that the parties intended that the Opponent would be the owner of the copyright in the Trade Mark and/or that the Applicant would require the permission of the Opponent to reproduce the Trade Mark.

10. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

11. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

12. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

13. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[21]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[22]

    [21] [2004] EWCA Civ 1028; [2005] FSR 10.

    [22] [2012] FCA 81, [147].

14. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[23]

    [23] Ibid [165]-[166].

15. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Applicant and Opponent had a long standing trading history pursuant to which the Opponent sold bottles of wine, labelled with the Opponent’s Mark and/or the Unregistered Mark in Australia, to the Applicant.  The Applicant was therefore aware of the Opponent’s prior rights in Australia in the Opponent’s Mark and the Unregistered Mark at the time the Opponent filed the Applicant’s Mark, which mark:

    1.    Is deceptively similar to the Opponent’s Mark; and/or

    2.    Is substantially identical or deceptively similar to the Unregistered Mark; and further

    3.    Copies, exactly, both the font and colour of the words ‘New Boss’ and the Figure contained in the Unregistered mark, which marks were applied to the bottles of wine sold to the Applicant by the Opponent.

    As such the Applicant has acted in bad faith in attempting to register the Applicant’s Mark.  

16. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[24]  In circumstances where neither party’s evidence can be tested by cross-examination (and in the case of the Applicant’s evidence, alleged by the Opponent to be altered, by forensic analysis), each party has provided a very different story regarding the creation and ownership of the various marks from which the Trade Mark is derived.  In particular, the Applicant claims that it held an initial internal discussion in 2016 in respect of a precursor to the Trade Mark, while the Opponent claims that it created the various precursor elements to the Trade Mark in early 2017.  Both parties provide WeChat extracts to support their claim.

    [24] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

17. The fundamental issue with the Opponent’s case is this; The Opponent’s evidence does not clearly establish that the Opponent and the Applicant ever reached a meeting of minds as to the agreed ownership and use of the precursor elements to the Trade Mark.  While I am satisfied on the balance of probabilities that the Opponent did design most of the earlier elements of the Trade Mark and provided those elements to the Applicant, there is no evidence that definitively establishes that the Applicant agreed that control of the use of precursor elements to the Trade Mark would be held by the Opponent.  In particular there is no written agreement in which the Applicant pays any licence fee to the Opponent or commits to only purchasing New Boss wine from the Opponent; rather there are contracts with standard terms (that may or may not apply to the exact transaction) that suggest that the wine labels created by the Opponent, and printed by the Applicant, were to be owned by the Applicant.  Furthermore the Applicant’s evidence contains WeChat conversations (said to be taken out of context by the Opponent) where the Opponent encouraged the Applicant to register the precursor elements to the Trade Mark as IP rights.

18. Given the degree of uncertainty, caused by the parties not reaching a definitive shared understanding as to ownership, I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark that he may well have considered, based on certain documents and WeChat conversations, that he owned, amounted to an application made in bad faith.  In circumstances where the documentary evidence in support of the s 62A ground of opposition is unclear and subject to different interpretations and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character.  Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision and Costs

19. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 2024353 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

20. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    5 October 2021